Lack of Bona Fide Intent: TTAB Precidential Decision 39 from 2013

Just a reminder as we begin the new year, it’s important to ensure that clients do, indeed, have a bona fide intention to use a mark in commerce, and not just a desire to reserve a mark in case they would like to use it in the future. Case in point: Swatch AG v. M.Z. Berger & Co., 108 USPQ2d 1463 (TTAB 20130) [precidential]. Swatch filed the opposition, claiming likelihood of confusion and lack of bona fide intent to use Berger’s pending application for IWATCH in connection with clocks and watches. The applicant provided documents to prove its intent to use the mark related to its application to register the mark, a trademark search report, an internal email reporting a conversation with the Examining Attorney, three internal emails forwarding pictures or rendering of watches and clocks bearing the IWATCH mark (but which were created eight months after the application was filed) and which were submitted to the PTO as examples of promotional material, and testimony of applicant’s witnesses.

Unfortunately, it turns out that the renderings were never actually used as promotional materials, and testimony differed as to whether they were mock ups or renderings of an actual product. There was evidence that the applicant never intended to use the mark in connection with clocks. Although there were some internal brainstorming sessions about using the mark in connection with a “smart watch”, the applicant had never offered such a product and had made no effort to develop such a product in the more than one-year period after the application was filed. The Board concluded that, at the time the application was filed, the applicant’s intent was only to reserve a right in the mark in case it later decided to develop such a product. That does not equal a bona fide intent to use a mark, and the opposition was sustained.

Source: http://thettablog.blogspot.com/2013/10/precedential-no-39-ttab-sustains-swatch.html

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